UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Netflix, Inc. and Roku, Inc.,
`Petitioners,
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`v.
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`Uniloc 2017 LLC,
`Patent Owner.
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`
`
`PTAB Case No. IPR202020-00041
`Patent No. 8,407,609 B2
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`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,407,609
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`Page 1 of 78
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`GOOGLE EXHIBIT 1011
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`

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`TABLE OF CONTENTS
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`Page
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`EXHIBIT LIST ........................................................................................................ V 
`I. 
`INTRODUCTION .......................................................................................... 1 
`II.  MANDATORY NOTICES ............................................................................ 2 
`A. 
`Real party-in-interest ............................................................................ 2 
`B. 
`Related matters ..................................................................................... 2 
`C. 
`Counsel and service information .......................................................... 3 
`III.  REQUIREMENTS FOR INTER PARTES REVIEW ..................................... 4 
`A.  Grounds for standing ............................................................................ 4 
`B. 
`Overview of challenge and relief requested ......................................... 4 
`1. 
`Identification of prior art ............................................................ 4 
`2. 
`Grounds for challenge ................................................................ 5 
`3. 
`Statutory Ground(s) of Challenge and Legal Principles ............ 5 
`The Board Should Exercise Its Discretion to Institute Review ........... 5 
`C. 
`IV.  DESCRIPTION OF TECHNOLOGY ............................................................ 6 
`A.  Overview of the technology ................................................................. 6 
`B. 
`Overview of the ’609 Patent ................................................................. 8 
`1. 
`The Alleged Invention ............................................................... 9 
`2. 
`The Challenged Claims ............................................................ 11 
`CLAIM CONSTRUCTION ......................................................................... 12 
`A. 
`“Computer System” ............................................................................ 12 
`B. 
`“Streamed” ......................................................................................... 13 
`VI.  LEVEL OF ORDINARY SKILL IN THE ART .......................................... 14 
`VII.  SPECIFIC GROUNDS FOR PETITION ..................................................... 14 
`A.  Ground I: Claims 1-3 were obvious over the combined
`teachings of Davis and Choi ............................................................... 14 
`1.  Motivations to Combine Davis and Choi ................................ 14 
`
`V. 
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`-i-
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`Page 2 of 78
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`TABLE OF CONTENTS
`(continued)
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`Page
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`2. 
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`3. 
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`4. 
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`5. 
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`Claim 1.preamble: “A method for tracking digital media
`presentations delivered from a first computer system to a
`user’s computer via a network comprising:” ........................... 18 
`Claim 1.a: “providing a corresponding web page to the
`user’s computer for each digital media presentation to be
`delivered using the first computer system;” ............................ 22 
`Claim 1.b: “providing identifier data to the user’s
`computer using the first computer system;” ............................ 24 
`Claim 1.c: “providing an applet to the user’s computer
`for each digital media presentation to be delivered using
`the first computer system, wherein the applet is operative
`by the user’s computer as a timer;” ......................................... 26 
`Claim 1.d: “receiving at least a portion of the identifier
`data from the user’s computer responsively to the timer
`applet each time a predetermined temporal period elapses
`using the first computer system; and” ...................................... 27 
`Claim 1.e: “storing data indicative of the received at
`least portion of the identifier data using the first computer
`system;” .................................................................................... 33 
`Claim 1.f: “wherein each provided webpage causes
`corresponding digital media presentation data to be
`streamed from a second computer system distinct from
`the first computer system directly to the user’s computer
`independent of the first computer system;” ............................. 34 
`Claim 1.g: “wherein the stored data is indicative of an
`amount of time the digital media presentation data is
`streamed from the second computer system to the user’s
`computer; and” ......................................................................... 36 
`10.  Claim 1.h: “wherein each stored data is together
`indicative of a cumulative time the corresponding web
`page was displayed by the user's computer.” ........................... 39 
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`6. 
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`7. 
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`8. 
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`9. 
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`TABLE OF CONTENTS
`(continued)
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`Page
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`B. 
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`3. 
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`4. 
`
`5. 
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`11.  Claim 2: “The method of claim 1, wherein the storing
`comprises incrementing a stored value dependently upon
`the receiving.” .......................................................................... 40 
`12.  Claim 3: “The method of claim 2, wherein the received
`data is indicative of a temporal cycle passing.” ....................... 42 
`Ground II: Claims 1-3 were obvious over the combined
`teachings of Siler and Davis ............................................................... 43 
`1.  Motivations to Combine Siler and Davis ................................. 43 
`2. 
`Claim 1.preamble: “A method for tracking digital media
`presentations delivered from a first computer system to a
`user’s computer via a network comprising:” ........................... 46 
`Claim 1.a: “providing a corresponding web page to the
`user’s computer for each digital media presentation to be
`delivered using the first computer system;” ............................ 51 
`Claim 1.b: “providing identifier data to the user’s
`computer using the first computer system;” ............................ 53 
`Claim 1.c: “providing an applet to the user’s computer
`for each digital media presentation to be delivered using
`the first computer system, wherein the applet is operative
`by the user’s computer as a timer;” ......................................... 54 
`Claim 1.d: “receiving at least a portion of the identifier
`data from the user’s computer responsively to the timer
`applet each time a predetermined temporal period elapses
`using the first computer system; and” ...................................... 56 
`Claim 1.e: “storing data indicative of the received at
`least portion of the identifier data using the first computer
`system;” .................................................................................... 59 
`Claim 1.f: “wherein each provided webpage causes
`corresponding digital media presentation data to be
`streamed from a second computer system distinct from
`the first computer system directly to the user’s computer
`independent of the first computer system;” ............................. 61 
`
`6. 
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`7. 
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`8. 
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`Page 4 of 78
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`TABLE OF CONTENTS
`(continued)
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`Page
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`9. 
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`Claim 1.g: “wherein the stored data is indicative of an
`amount of time the digital media presentation data is
`streamed from the second computer system to the user’s
`computer; and” ......................................................................... 62 
`10.  Claim 1.h: “wherein each stored data is together
`indicative of a cumulative time the corresponding web
`page was displayed by the user's computer.” ........................... 64 
`11.  Claim 2: “The method of claim 1, wherein the storing
`comprises incrementing a stored value dependently upon
`the receiving.” .......................................................................... 66 
`12.  Claim 3: “The method of claim 2, wherein the received
`data is indicative of a temporal cycle passing.” ....................... 68 
`VIII.  CONCLUSION ............................................................................................. 70 
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`-iv-
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`Page 5 of 78
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
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`EXHIBIT LIST
`Ex. 1001 U.S. Patent No. 8,407,609 B2 to Turner et al. (“’609 Patent”)
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`Ex. 1002 Declaration of Michael Franz, Ph.D. (“Franz”)
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`Ex. 1003 U.S. Patent No. 5,796,952 (“Davis”)
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`Ex. 1004 U.S. Pat. Appl. Pub. No. 2003/0236905 A1 (“Choi”)
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`Ex. 1005 U.S. Pat. Appl. Pub. No. 2004/0133467 A1 (“Siler”)
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`Page 6 of 78
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Petitioners request
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`inter partes review (“IPR”) of claims 1-3 of U.S. Patent No. 8,407,609 (Ex. 1001).
`
`I.
`
`INTRODUCTION
`The ’609 Patent claims a system that tracks both the amount of time that
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`5
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`content is streamed to a user’s computer and the amount of time a web page
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`containing that content is displayed. But these two elements, along with the other
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`elements of the claims, were standard fare in the art by 2008, the claimed priority
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`date of the ’609 Patent. In fact, all of the claim elements were well-known in the
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`art at least five years earlier. The ’609 Patent alleges that its disclosed tracking
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`10
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`techniques provide a great improvement to the monetization of Internet
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`advertisements. But as Petitioners demonstrate with the use of three prior art
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`references, Davis, Choi, and Siler, practitioners in the art were already well-aware
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`of these same tracking techniques.
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`As the ’609 Patent explains, the field of Internet advertising was always
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`15
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`looking for more and better ways to track user interactions with content.
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`Practitioners in the field were highly motivated to develop new tracking techniques,
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`combine existing tracking techniques, or increase the availability of usage tracking
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`information in any other way possible.
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`Considering the conventional claim elements within the context of a field
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`20
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`highly motivated to experiment and develop new techniques, the ’609 Patent is
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`-1-
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`Page 7 of 78
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
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`revealed as a late disclosure of old elements assembled together to perform their
`
`ordinary functions and yielding their expected results. It is a classic case of
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`obviousness.
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`For the reasons described herein, Petitioners request institution of an inter
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`5
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`partes review and cancellation of all claims of the ’609 Patent.
`
`II. MANDATORY NOTICES
`A. Real party-in-interest
`Netflix, Inc. and Roku, Inc. (collectively, “Petitioners”) are the real parties-
`
`in-interest.
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`10
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`B. Related matters
`Patent Owner asserts that Petitioners infringe the ’609 Patent in the
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`following district-court lawsuits: Uniloc 2017 LLC v. Netflix, Inc., No. 8:18-cv-
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`02055 (C.D. Cal.) (complaint filed November 17, 2018); and Uniloc 2017 LLC v.
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`Roku, Inc., No. 8:19-cv-00295 (C.D. Cal.) (complaint filed February 14, 2019).
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`15
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`Patent Owner previously asserted that Petitioners infringe the ’609 Patent in
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`the following district-court lawsuits, which are now dismissed: Uniloc 2017 LLC v.
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`Netflix, Inc., No. 8:18-cv-01899 (C.D. Cal.) (complaint filed October 23, 2018);
`
`and Uniloc 2017 LLC v. Roku, Inc., No. 1:18-cv-01126 (W.D. Tex.) (complaint
`
`filed December 27, 2018).
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`-2-
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`Page 8 of 78
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
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`Patent Owner has asserted the ’609 Patent against other parties in the
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`following district-court lawsuits: Uniloc 2017 LLC v. Am. Broad. Cos., Inc.,
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`No. 8:18-cv-01930 (C.D. Cal.); Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-
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`00456 (E.D. Tex.); Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00502
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`5
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`(E.D. Tex.); Uniloc 2017 LLC v. Am. Broad. Cos., Inc., No. 8:18-cv-02056
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`(C.D. Cal.); Uniloc 2017 LLC v. Vudu, Inc., No. 1:19-cv-00183 (D. Del.); and
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`Uniloc 2017 LLC v. Sling TV, LLC, No. 1:19-cv-00278 (D. Colo.).
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`Sling TV, L.L.C. (“Sling”) filed a petition for inter partes review against
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`the ’609 Patent on July 22, 2019. IPR2019-01367. For the reasons set forth below,
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`10
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`there is no overlap in grounds or prior art references between this Petition and the
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`Sling IPR Petition.
`
`Petitioners are unaware of any other related matters.
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`C. Counsel and service information
`Lead counsel: Babak Tehranchi (Reg. No. 55,937).
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`15
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`Back-up counsel: Matthew Bernstein (pro hac vice to be requested), Patrick
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`J. McKeever (Reg. No. 66,019), and Kyle R. Canavera (Reg. No. 72,167).
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`These attorneys can be reached by mail at Perkins Coie LLP, 11452 El
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`Camino Real, Suite 300, San Diego, CA 92130-2080; by phone at (858) 720-5700;
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`and by fax at (858) 720-5799.
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`-3-
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`Page 9 of 78
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
`
`Petitioners consent to electronic service. All services and communications
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`to the attorneys listed above may be sent to:
`
`PerkinsServiceUniloc2IPRs@perkinscoie.com. A Power of Attorney is being filed
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`concurrently.
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`5
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for standing
`Petitioners certify that the ’609 Patent is available for IPR and that
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`Petitioners are not barred or estopped from requesting IPR challenging claims of
`
`the ’609 Patent on the grounds presented here.
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`10
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`B. Overview of challenge and relief requested
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioners request
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`cancellation of claims 1-3 of the ’609 Patent under pre-AIA 35 U.S.C. § 103.
`
`1.
`Identification of prior art
`Petitioners rely upon the references listed in the Table of Exhibits, including:
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`15
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`1. U.S. Pat. No. 5,796,952 (“Davis” (Ex. 1003)), issued on August 18, 1998
`
`from an application filed on March 21, 1997. Davis is prior art under pre-AIA 35
`
`U.S.C. § 102(b).
`
`2. U.S. Pat. Appl. Pub. No. 2003/0236905 (“Choi” (Ex. 1004)), published
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`on December 25, 2003 from an application filed on June 25, 2002. Choi is prior
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`20
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`art under pre-AIA 35 U.S.C. § 102(b).
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`-4-
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
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`3. U.S. Pat. Appl. Pub. No. 2004/0133467 (“Siler” (Ex. 1005)), which
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`published on July 8, 2004 from an application filed on June 17, 2003. Siler is prior
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`art under pre-AIA 35 U.S.C. § 102(b).
`
`Davis, Choi, and Siler were not in front of the Patent Office during the
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`5
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`original examination of the ’609 Patent.
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`2. Grounds for challenge
`
`Ground Basis
`1
`§ 103
`2
`§ 103
`
`Reference(s)
`Davis, Choi
`Siler, Davis
`
`Challenged
`Claims
`1-3
`1-3
`
`This Petition, supported by the declaration of Professor Dr. Michael Franz
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`(“Franz” (Ex. 1002)), demonstrates that there is a reasonable likelihood that
`
`Petitioners will prevail with respect to cancellation of at least one challenged claim.
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`10
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`See 35 U.S.C. § 314(a).
`
`3.
`Statutory Ground(s) of Challenge and Legal Principles
`This Petition requests cancellation of claims 1-3 of the ’609 Patent under
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`pre-AIA 35 U.S.C. § 103.
`
`C. The Board Should Exercise Its Discretion to Institute Review
`Sling filed a petition for inter partes review against the ’609 Patent on July
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`15
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`22, 2019. IPR2019-01367, Paper No. 2 (“Sling IPR Petition”). The Board should
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`institute inter partes review on the present Petition, which is based on entirely
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`separate references and grounds from the Sling IPR Petition. The recent update to
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`Page 11 of 78
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
`
`the Trial Practice Guide, and in particular its discussion of the General Plastics
`
`factors, support Petitioners’ position. First, this is Petitioners’ only petition against
`
`the ’609 Patent (Factor 1). Second, Patent Owner has not filed a preliminary
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`response and the Board has not determined whether to institute review on the Sling
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`5
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`IPR Petition (Factor 3). In addition, there is no relationship between Sling and
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`Petitioners with respect to the ’609 Patent (see Trial Practice Guide at 22 n.1), and
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`Sling was not sued in the same court as Petitioners. Moreover, Petitioners have not
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`communicated, directly or indirectly, with Sling regarding prior art invalidity of
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`the ’609 Patent or petitions for inter partes review of the ’609 Patent. Sling IPR
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`10
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`Petition uses entirely different references from this Petition. Patent Owner’s cases
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`against Petitioners are not sufficiently advanced to warrant non-institution; the
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`Markman hearing is set for November 21 of this year, and no trial date has been set.
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`And Patent Owner’s case against Sling is even less advanced: the Markman
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`hearing is set for February 2020, and trial is set for January 2021.
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`15
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`IV. DESCRIPTION OF TECHNOLOGY
`A. Overview of the technology
`By the time of the ’609 Patent’s priority date in 2008, usage tracking
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`technology in networked systems was highly developed. Franz ¶¶31-48. In the
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`early days of the Internet and World Wide Web in the early- to mid-1990s,
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`tracking data such as number of clicks on a link or number of visits to a page was
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`Page 12 of 78
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
`
`well-known. Id. By the late-1990s to early-2000s, usage tracking had advanced,
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`and it was well-known how to track the duration that a web page was displayed,
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`the duration that content was displayed in a web page, and the duration that
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`network transfers were conducted. Id. By the ’609 Patent’s priority date in 2008,
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`5
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`usage tracking had advanced even further, with focus on techniques like tracking
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`high-frequency cursor hovering in a web page to determine a user’s passive
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`interest in a portion of a web page. Id. At all stages in this development, the
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`advancement of usage tracking technologies was motivated in significant part by
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`the desire of advertisers and other entities with a monetary interest in web content
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`10
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`to have more insight into how their assets were being used. Id.
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`The field of streaming media had likewise gone through several generations
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`of technological advancement by 2008 from the early days of the Internet and
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`World Wide Web. Streaming audio and video displayed in webpages was very
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`common in the early- to mid-2000s and was highly prevalent by 2008. Franz ¶¶49-
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`15
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`57. Likewise, more sophisticated architectures for delivering content had become
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`common by 2008, such as content delivery networks (“CDNs”) that delivered
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`high-bandwidth content (like streaming video) through a separate computer system
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`than the website (and its webpages) that presented the content. Id. And multiple
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`layers of networking protocols, such as real time transport protocol (RTP) and real
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`time streaming protocol (RTSP), had been developed and were in regular use by
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
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`2008 that made implementation of streaming media highly predictable and highly
`
`reliable for the user. Id.
`
`B. Overview of the ’609 Patent
`The ’609 Patent issued from U.S. Patent Application No. 12/545,131, filed
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`5
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`on August 21, 2009. It claims priority to numerous provisional applications, the
`
`earliest of which was filed on August 21, 2008. Compare, ’609 Patent at Cover
`
`Page with id. at 1:8-28. Therefore, the priority date of the ’609 Patent is no earlier
`
`than August 21, 2008.
`
`Most of the ’609 Patent disclosure is directed at the generic problem of
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`10
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`providing “a system and method of using the Internet as a global network to unite
`
`people with common interests.” Id. at 2:5-9. That disclosure includes
`
`implementations of a search engine interface, id. at 4:22-5:56, Figs. 2-3, and
`
`various methods for uploading or creating content to be searched with that user
`
`interface, id. at 5:59-60, Fig. 4; id. at 6:41-43, Fig. 5; id. at 7:61-63, Figs. 6-7; id. at
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`15
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`10:1-5, Fig. 8. But the claims of the ’609 Patent are not directed to this subject
`
`matter. Rather, the claims of the ’609 Patent include the limited subject matter in a
`
`portion of column seven and at the end of the ’609 Patent disclosure, related to
`
`tracking user activity with respect to a webpage. Id. at 7:15-58, 11:37-14:8,
`
`Figs. 9-10.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
`
`
`1.
`The Alleged Invention
`The ’609 Patent disclosure relevant to the challenged claims focuses on the
`
`tracking of not just webpage visits, but also the duration that the user remains on a
`
`webpage. ’609 Patent at 7:15-25, 11:37-53. When the webpage displays
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`5
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`audio/visual content, the system is effectively tracking “how long a user actually
`
`watched, and/or listened, to a presented program.” Id. at 11:50-53.
`
`When the content displayed on a webpage is streamed from a computer
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`across the network, the system tracks the time the user remains on the webpage by
`
`running a timer on the user’s computer. Id. at 7:25-41, 12:46-13:42. The timer can
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`10
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`be implemented as an “applet.” Id. at 12:66-13:4. The timer can have a
`
`predetermined time period, such as 15 seconds. Id. at 13:6-8. When the time
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`period expires, the applet can transmit a notification to a server across a network.
`
`Id. at 13:10-11. The server can then log that event, such as by storing a record in a
`
`database. Id. at 13:12-13. Using this technique, the system can track the amount
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`15
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`of time that the user remains on the webpage, using a series of these periodic timer
`
`events accumulated at the server. The ’609 Patent illustrates this technique in
`
`Figure 10:
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
`
`
`
`
`Id. at Fig. 10.
`
`The ’609 Patent asserts that “[s]uch knowledge” of how long a user
`
`remained on a webpage “is not conventionally available.” Id. at 13:43-48. And
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`5
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`tracking the duration of the user’s visit to a webpage is beneficial because it allows
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`improvement in the “scale of payments for advertising displayed” on the webpage.
`
`Id. at 13:48-14:2.
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`-10-
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
`
`
`2.
`The Challenged Claims
`Claim 1 describes a method for tracking how long a user stays on a webpage
`
`using the periodic timer approach described above.
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`5
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`10
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`15
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`20
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`25
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`1. A method for tracking digital media presentations
`delivered from a first computer system to a user’s
`computer via a network comprising:
`[a] providing a corresponding web page to the user’s
`computer for each digital media presentation to be
`delivered using the first computer system;
`[b] providing identifier data to the user’s computer using
`the first computer system;
`[c] providing an applet to the user’s computer for each
`digital media presentation to be delivered using the first
`computer system, wherein the applet is operative by the
`user’s computer as a timer;
`[d] receiving at least a portion of the identifier data from
`the user’s computer responsively to the timer applet each
`time a predetermined temporal period elapses using the
`first computer system; and
`[e] storing data indicative of the received at least portion
`of the identifier data using the first computer system;
`[f] wherein each provided webpage causes corresponding
`digital media presentation data to be streamed from a
`second computer system distinct from the first computer
`system directly to the user’s computer independent of the
`first computer system;
`[g] wherein the stored data is indicative of an amount of
`time the digital media presentation data is streamed from
`the second computer system to the user’s computer; and
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`-11-
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`Petition for Inter Partes Review of U.S. Pat. No. 8,407,609
`PTAB Case No. IPR2020-00041
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`[h] wherein each stored data is together indicative of a
`cumulative time the corresponding web page was
`displayed by the user’s computer.
`’609 Patent at 14:17-45. Dependent claims 2 and 3 recite further details related to
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`5
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`the timer activity, including: that the storing at element 1.e includes incrementing
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`a stored value (claim 2); and the data received as part of element 1.d is indicative
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`of “a temporal cycle passing” (claim 3).
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`V. CLAIM CONSTRUCTION
`In an IPR proceeding, the challenged claims are construed “in accordance
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`with the ordinary and customary meaning of such claim as understood by one of
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`ordinary skill in the art and the prosecution history pertaining to the patent.”
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`37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
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`2005) (en banc).
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`A.
` “Computer System”
`This term is recited in claim 1 in two forms, as “first computer system” and
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`“second computer system.” The ’609 Patent provides an express definition for this
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`term:
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`The terms “computer,” “computer device [sic] and/or
`“computer system” as used herein may generally take the
`form of single computing devices or collections of
`computing devices having a common operator or under
`common control.
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`’609 Patent at 3:52-55. This term should be construed using the express definition
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`as “single computing devices or collections of computing devices having a
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`common operator or under common control.”
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`B.
`“Streamed”
`This limitation is recited in element 1.g of claim 1 as “wherein the stored
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`data is indicative of an amount of time the digital media presentation data is
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`streamed
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`from
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`the second computer system
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`to
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`the user’s computer.”
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`The ’609 Patent provides the following definition of the term “streaming”:
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`For non-limiting purposes of explanation, “streaming,” as
`used herein, generally refers to a technique for
`transferring data such that it can be processed as a
`substantially steady or continuous stream and a user’s
`browser or plug-in can start presenting the data before the
`entire file has been transmitted.
`’609 Patent at 4:43-47. Hence, the data being “streamed” from the second
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`computer system to the user’s computer means data is transferred from the second
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`computer system to the user’s computer—in such a way so that the data can be
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`processed in a substantially stead and continuous fashion and the user’s computer
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`can start presenting the data before the entire sequence of data has been fully
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`transmitted. Thus, this limitation should be construed as “transferred via a
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`technique such that the data can be processed as a substantially steady or
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`continuous sequence.” Franz ¶¶73-77.
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`Petitioners note that the Sling IPR Petition proposed a different construction
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`for this term. Namely, Sling proposed to construe the “streamed” portion of this
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`limitation as “is presented to the user’s computer.” Sling IPR Petition, pp. 9-10.
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`That is, the Sling IPR Petition seeks a construction of “streaming” that focuses on
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`the presentation of data, as opposed to the transfer of data. While Petitioners
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`disagree that this is the appropriate construction, Petitioners also describe the
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`invalidity grounds in light of this alternative construction.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`A person having ordinary skill in the art (also “POSA” herein) at the time of
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`the alleged invention would have had at least a B.S. degree in computer science,
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`computer engineering, or electrical engineering (or equivalent experience) and
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`would have had at least two years of experience with web development, including
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`the then-current web technologies such as HTML, XML, Java, and JavaScript.
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`Franz ¶¶21-25. Additional educational experience in computer science could make
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`up for less work experience and vice versa.
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`VII. SPECIFIC GROUNDS FOR PETITION
`A. Ground I: Claims 1-3 were obvious over the combined teachings
`of Davis and Choi
`1. Motivations to Combine Davis and Choi
`Davis disclosed most of the features of claims 1-3, including the provision of
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`a web page and a timer applet to a client from a first computer system, provisions
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`of digital media presentation data to the client from a second computer system,
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`tracking of how long the web page is displayed on the client, and storing of this
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`tracking data on the first computer system. Choi disclosed other features arguably
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`not explicitly disclosed in Davis, and a POSA would have found it obvious to
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`modify Davis’s system based on Choi’s teachings to reach the alleged invention of
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`claims 1-3.
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`“When a patent simply arranges old elements with each performing the same
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`function it had been known to perform and yields no more than one would expect
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`from such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 417 (2007) (quotation marks omitted). A POSA would have
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`recognized that the differences between Davis and claims 1-3 of the ’609 Patent
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`were nothing more than the exchange of one set of well-known elements disclosed
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`in Davis for another set of well-known elements used widely in the field, with Choi
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`serving as the example disclosure.
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`Davis disclosed that the web page included images, audio, video, Davis at
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`7:19-29, and further described using the Internet to download various content for
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`presentation and viewing on web pages. Davis at 3:33-53; 4:1-7. Davis further
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`explained that its tracking program can be used with “live” content such as live
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`news or entertainment feeds, to determine how long such live content was viewed
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`by the user. Davis at 16:63-17:10. But Davis arguably did not explicitly mention
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`streaming as a technique by which that content was delivered.
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`By the time of Choi’s disclosure in June 2002, streaming content was not
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`only a well-known content delivery technique, but it was widely used and a
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`preferred approach in many user-facing web applications. Franz ¶¶95-102. This
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`was even more so by the time of the ’609 Patent’s alleged invention in August
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`2008. Id. In light of Davis’s disclosure of providing audio and video in a web
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`page, and in light of the fact that streaming of audio and video was well-known
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`and preferred in many web applications by the time of the ’609 Patent’s alleged
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`invention, a POSA would have been motivated to modify Davis’s system to
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`include streaming content in the web pages. Id. Furthermore, because Davis
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`disclosed the use of web pages based on standard Internet technology, such as
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`HTML, HTTP, TCP/IP, etc., Davis at 7:1-29, 8:53-9:15, a POSA would have had a
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`reasonable expectation of success in adding streaming content to the web pages of
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`Davis given that streaming was regularly used with these standard Internet
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`technologies. Franz ¶¶95-102.
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`Another arguable difference between Davis and the ’609 Patent’s claims is
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`that Davis did not disclose that the timer applet used on the client machine
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`repeatedly reported the consumption of a content at the expiration of
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`predetermined time intervals. Davis instead disclosed that the timer applet waited
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`until the user navigated away from the web page, and then reported the duration of
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`the web page’s display to the server. Davis at 12:13-39. But a POSA would have
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`recognized that waiting until the web page was no longer displayed was only one
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`timing scheme by which the client could report tracking data to the server. Franz
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`¶¶103-106. Another very well-known timing scheme was to use recurring,
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`periodic reports, as disclosed by Choi. Id. In fact, the periodic messaging scheme
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`had become widely implemented and even a preferred approach in many
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`networked environments, such as with the “heartbeat” paradigm. Id. As such, a
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`POSA would have been motivat